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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Parfums Christian Dior S.A. v. Jadore
Case No. D2000-0938
1. The Parties
The Complainant is Parfums Christian Dior S.A., a corporation organized under the laws of France, with postal address of 125 rue du President Wilson, Levallois-Perret Cedex, France.
The Respondent is Jadore, 4606 21st Street, Avondale, Maryland, U.S.A. The Administrative and Billing Contacts are listed as Nadia Tereshchuk and Tom Lewis, 496 Cypress Drive, Laguna Beach, CA 92651, U.S.A.
2. The Domain Name and the Registrar
The domain names at issue is "jadore.com" (hereinafter the "Domain Name"). The registrar is Network Solutions, Inc. (hereinafter the "Registrar").
3. Procedural History
On August 3, 2000, the Complainant filed by e-mail a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Center received a hardcopy of the Complaint on August 7, 2000. A copy of the Complaint was notified on August 16, 2000, to the Respondent.
On August 10, 2000, the Registrar confirmed that the Domain Name had been registered via the Registrar’s registration services, that Jadore was the current registrant of the Domain Name and that the Domain Name was active. The Registrar also confirmed that Network Solutions' 5.0 Service Agreement was applicable to the Domain Name.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on August 16, 2000.
The administrative panel (hereinafter the "Panel") has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated August 16, 2000, the Center informed the Respondent of the commencement of the proceedings as of August 16, 2000, and of the rule providing for a response to the Complaint within 20 days, i.e. before September 4, 2000 (hereinafter the "Response").
The Respondent filed the Response on September 5, 2000, requesting notably to have the dispute decided by a three-member Administrative Panel.
On September, 11, 2000, Complainant asked the Center permission to amend the Complaint to add also the domain names "jadore.net" and "jadore.org". On September 19, 2000, the Center denied the addition of new domain names to the present case D2000-0938. Therefore, this Decision is limited to the domain name "jadore.com".
On September 12, 2000, Complainant filed a request for permission to file a supplemental response as well as a supplemental submission in support of Complainant's Complaint. On September 21, 2000, Respondent filed an opposition to Complainant's request stating, in essence, that the facts referred to by Complainant did not occur subsequent to the filing of the Complaint.
On October 2, 2000, Respondent requested a permission for extension of time to file a supplemental response and, on October 13, 2000, filed a supplemental response.
On October 16, 2000, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and each of the panelists issued a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant is a producer of perfumes and other luxury items. In 1999, the Complainant launched the J'ADORE product line (Complainant's Exhibit H). The Complainant now owns registrations of the trademark J'ADORE in numerous countries around the world.
Copies of the corresponding registration certificates are attached to the Complaint as Exhibit D. Notably, Complainant owns the International Registration no. 687 422, registered on February 13, 1998, covering in excess of 20 countries based on a French Registration no. 742842 with filing date of September13, 1994, for the word mark J'ADORE for goods in class 3 including perfumes, and for clothing items in class 25. In the United States, Complainant filed on October 23, 1997, an intent-to-use application to register J'ADORE for perfume and eau de toilette which is still pending (Complainant's Exhibits E-G).
The Domain Name had originally been registered on May 7, 1999, in the name of Crowded Domains of 4606 21st Mount Rainer, MD 20712, USA by Mr. Myron Tereshchuk (who used the internet pseudonym "Matt Burke"). At some point, Mr. Tereshchuk transferred the domain name to "Jadore," a business he claims is run by his wife, Nadia Tereshchuk. The Domain Name is active as of the date of this decision.
5. Parties' Contentions
- that it has international rights in the trademark J'ADORE that were in existence prior to any date upon which the Respondent can rely;
- that the J'ADORE perfume products line was announced in the summer of 1999 and launched in Europe in the fall of 1999 and has quickly become one of the best selling perfumes;
- that in the beginning of February 2000, Robert Jackson, an agent for Complainant, approached the registrant Mr. Myron Tereshchuk (alias Mr. Burke) to purchase the Domain Name from Crowded Domains and that Mr. Burke agreed to sell it for US$ 1,000, but that on February 14, 2000, Mr. Burke advised that he had decided not to sell the domain name but instead to give it to his wife as a Valentine's Day present (Complainant's Exhibits J and K);
- that on March 8, 2000, Complainant sent a demand letter to the registrant requesting that the Domain Name be transferred to Complainant;
- that after receiving the demand letter and a follow-up letter, registrant, on March 26, 2000, revised the administrative contact as Nadia T of Jadore Store;
- that on April 12, 2000, the registrant responded to the demand letters stating that the Domain Name was a gift to his wife;
- that after having received the demand letters, for the first time, the registrant posted a website at jadore.com prominently featuring the J'ADORE trademark;
- that this website is a sham because there is no ability to order and there is no listing of a Jadore store at that location;
- that Respondent has no legitimate interest and no rights whatsoever in the Domain Name under debate, since the Respondent has no connection with Complainant;
- that the Respondent acted in bad faith by posting a website only after having received the demand letters and by showing their initial willingness to sell the domain name for US$ 1,000.
Complainant requests that the Domain Name registration be transferred to Complainant.
- that in early May 1999, a certain Andre Yador from Poland asked Myron Tereshchuk to register the Domain Name. Rather than wanting to register "yador.com" Mr. Yador insisted, for reasons that have not been explained, that the Domain Name be "jadore.com". Subsequently, Mr. Yador returned to Poland without paying for the domain name registration and a check given by a relative of his bounced;
- that on February 4, 2000, Mr. Myron Tereshchuk received from Robert Jackson an invitation to make an offer to sell the Domain Name and responded: "You can have the domain for $1,000." Robert Jackson made a counteroffer of US$ 500 (Respondent's Exhibits C and D);
- that on February 8, 2000, Mr. Myron Tereshchuk gave the Domain Name as a present to his wife;
- that after having received Complainant's demand letters, Mr. Myron Tereshchuk conducted a common law trademark search and identified Mr. Tom Lewis, as the person who appeared to have used the J'ADORE mark the longest in the USA. Mr. Myron Tereshchuk contacted Mr. Tom Lewis and appraised him of the matter;
- that thereafter the website was launched and that on March 31, 2000, the NSI database was updated to indicate that Mr. Tom Lewis and Ms. Nadia Tereshchuk are administrative contacts for the Domain Name;
- that Ms. Tom Lewis is the senior user of the J'ADORE mark and that Complainant created reverse confusion.
6. Discussion and Findings
Subsequent to the filing of the Complaint and the Response, the parties filed supplementary submissions. Supplemental filings are not provided for under the Policy and the ICANN Rules and, therefore, this Panel must decide whether to admit them or not. The Policy and the ICANN Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances (Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427). Prior WIPO decisions state that supplemental filings should only be permitted where there exist "new, pertinent facts that did not arise until after the submission of the complaint" (Gordon Summer, p/k/a Sting v. Michael Urvan, D2000-0596). Respondent's request for finding that Complainant engaged in "reverse hijacking" does not automatically grant Complainant a right to file a supplementary submission. Nor does Respondent’s story about Mr. Lewis create new facts that justify a response as Mr. Lewis was already listed as an administrative contact for the Domain Name when the Complaint was filed. Likewise, the information Respondent has uncovered about Mr. Robert Jackson was available prior to the filing of the Response. In fact, most of the proposed supplemental submissions do not allege new pertinent facts but merely reargue the facts already alleged by the opposing party. Therefore, this panel does not admit the parties' supplementary submissions.
To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph. 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant has shown that it owns numerous J'ADORE trademark registrations claimed in particular for perfume products in a considerable number of countries around the world. The Policy does not require that the trademark be protected in the respondent's country (Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO D2000-0074). Therefore, the question of whether Complainant owns valid trademark rights in the USA needs not be reached since Complainant clearly owns valid trademark registrations for the J'ADORE mark in numerous other countries and Respondent does not contest this fact.
Despite the difference in the apostrophe, the Respondent’s Domain Name "jadore.com" is virtually identical to Complainant’s trademark J'ADORE (e.g. French Registration no. 742842), and this Panel so finds (Stella D'Oro Biscuit Co, Inc. v. The Patron Group, Inc., WIPO D2000-0012). It is further well established that the specific top level of the domain name such as ".net" or ".com" does not affect a domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (See e.g. Busy Body, Inc. v. Fitness Outlet Inc., WIPO D2000-0127, paragraph. 6).
Legitimate Rights or Interests
The relevant point in time to determine whether the registrant has legitimate rights or interests is before any notice of the dispute. A respondent does not have legitimate rights or interests if he only began using the domain name after having received a cease and desist letter (Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO 2000-0150). To rule otherwise would be to create a strong disincentive against the use of cease and desist letters as a means of trying to resolve disputes amicably, short of litigation or the filing of UDRP complaints. In the present case, before receiving the Complainant's demand letters, Respondent did not operate a business under the "j'adore" name and did not have any legitimate interest in this name. It was only after the cease and desist letter and several reminders were sent that Ms. Nadia Tereshchuk developed a website and Mr. Myron Tereshchuk contacted Mr. Tom Lewis. Any common law rights that Mr. Lewis enjoys in the name "J’adore" in connection with his store are thus irrelevant to the determination of whether Respondent had a legitimate interest at the time Complainant first gave notice of this dispute.
Absent any contrary facts suggesting a demonstrable prior plan or interest in the domain name, the fact that Mr. Myron Tereshchuk expressed his initial willingness to sell the domain name for US$ 1,000 may be a further indication that he did not have a genuine interest in the Domain Name. It also appears that the website operated by Respondent does not describe the specific products offered and does not allow to place orders. Thus, Respondent has not submitted any evidence of a use of the domain name in connection with a bona fide offering of goods or services.
Therefore, this Panel finds that Respondent has not demonstrated their rights or legitimate interest in the disputed Domain Name.
Registration and Use in Bad Faith
Respondent's allegation that Mr. Andre Yador ordered the registration of the Domain Name but did not pay for it is not supported by any evidence and is irrelevant, since the registered Domain Name is "jadore.com" and not "yador.com". Moreover, Respondent has not supported this alleged tale with any documentary evidence, such as a copy of the bounced check.
In any event, given that Mr. Myron Tereshchuk is "an intellectual property professional who routinely conducts patent infringement and validity searches" (Response, p. 4), he was on constructive notice of Complainant's trademark rights, since a simple search online would have revealed Complainant's mark. It is significant that affidavits and other submissions of Mr. Tereshchuk and the Respondent, although otherwise quite complete, do not deny that the domain name was registered and used with knowledge of Complainant’s JADORE mark. Indeed, at the time the domain name was registered on May 7, 1999, the JADORE mark was the subject of numerous international trademark registrations dating back to as early as 1994.
Further circumstances consistent with a finding of bad faith are that the website posted by Respondent appears to be a sham and that Mr. Myron Tereshchuk was initially willing to sell the Domain Name for US$ 1,000. Although each of these facts alone might be inconclusive, when viewed together and combined with the other facts in the record, the preponderance of the evidence leads to the conclusion that Respondent has not acted in good faith with respect to the Domain Name.
This Panel thus finds that Respondent has registered and used the disputed Domain Name in bad faith.
For all of the foregoing reasons, this Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name "jadore.com" be transferred to the Complainant.
David H. Bernstein, Esq. Mark Partridge, Esq.
Dated: November 3, 2000